Featured Posts
- Facebook Loses Reexaminations of Pragmatus’ Patents
- How is Reexamination Treating Round Rock Research?
- Reexamination has not Saved Apple against MobileMedia Patents, So Far
- What is an “Involved Application” in IPR Practice?
- Apple Victorious over Affinity Labs of Texas’ Portable Audio Player Patent
- Think IP Strategy Offers 2011 News Almanac
- An Update on Oracle’s Infringement Case against Google
- PTO Requests Public Comment on Proposed Rules for AIA Post-Issuance Proceedings
- Microsoft-i4i, Oracle-Google & VirnetX-Apple-Cisco Updates
- Oracle Patent to Emerge from Reexamination
- VirnetX again Sues for Infringement, and again Faces Reexaminations
- How Strong are Google’s Requests for Reexamination of the Lodsys Patents?
- PTO Board Sides with NVIDIA on Two Rambus “Barth I” Patents
- Oracle ‘520 Moves toward Confirmation in Reexamination
- Google Gets Mixed Result against Oracle’s Seventh Patent
- Did Google Request Reexamination of Lodsys Patents?
- Two Updates
- Oracle v. Google Android® Update
- Rambus Wins Limited Exclusion Order at ITC against NVIDIA, despite Pending Reexaminations
- 最初が肝心：不備のない再審査請求書を作成するために
- That’s My Patent You’re Reexamining…
- “Why Wait for Oppositions?” by Scott Daniels, 47 IDEA 343 (Law Review of Franklin Pierce Law School)
- The Basics
Noteworthy Links
- "The Interplay between Reexaminations, Preliminary Injunctions and Stays of Litigation" - by Dennis Crouch at PATENTLYO.COM
Favorite Patent Blogs
- All Things Pros
- CAFC Alert
- FDA Law Blog
- IPWatchdog
- Patent Docs
- Patently-O
- PLI Patent Law Practice Center
- Think IP Strategy
- US Patent Post-Grant Opposition
Recent Requests
PTO Statistics
Monsanto’s Attack on Two Pioneer Hi-Bred Patents among the Post-Grant Challenges Filed Week of October 15, 2012
| October 22, 2012
Monsanto has requested inter partes review of two Pioneer Hi-Bred International patents claiming a method for increasing corn seed quality (see inter partes review Request Nos. (3) & (4)). The companies are involved in an infringement action over these patents in Iowa.
At the end of August ViiV Healthcare Co. and Vertex Pharmaceuticals Inc. sued Mylan in Delaware for infringing an aspartyl protease inhibitor patent. Ranbaxy has now requested inter partes review of the patent (see inter partes review Request No. (5)).
The feud between Intellectual Ventures and Xilinx deepened Friday when the latter requested inter partes review of an IV video projection patent (see inter partes review Request No. (9)).
Apotex Challenge to Alcon Ophthalmic Treatment Patent Among the Post-Grant Filings Week of October 8, 2012
| October 16, 2012
Apotex requested inter partes review of U.S. Patent No. 7,671,070, owned by Alcon Pharmaceuticals and claiming a composition for treating ophthalmic infections (see inter partes review No. (2)). The ‘070 patent has been the subject of infringement actions filed by Alcon against Apotex, Watson and Lupin.
Research in Motion filed a request against MobileMedia’s U.S. Patent No. 6,441,828 that claims an image display apparatus (see inter partes review No. (3)). The ‘828 patent was originally owned by Sony who assigned it to MobileMedia. MobileMedia has received quite a number of patents from Sony and Nokia, and then sought to enforce them.
Reexamination Stay Granted Despite Direct Competition between Parties
| October 9, 2012
Judge Josephine Staton Tucker’s recent decision, granting a reexamination stay motion in Inogen, Inc. v. Inova Labs, Inc. (2012 U.S. Dist. LEXIS 144598), strongly suggests a growing inclination among trial judges to stay infringement actions pending completion of reexamination proceedings at the Patent Office. Judge Tucker refers repeatedly to the “reasonable likelihood of success” now applied by the PTO to determine whether to grant either an inter partes reexamination or one of the new post-grant proceedings created by the AIA; she finds that this elevated standard at the PTO for institution of a proceeding, (as compared with the “substantial new question of patentability”), means that such proceedings, once begun, are more likely to result in amendment or cancelation of the patent claims.
Judge Tucker began her analysis of the accused infringer’s stay motion, by reciting the customary three-part test:
(1)whether discovery is complete and whether a trial date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party.
Kyocera Attack on Two Scalable Display Patents, among the Post-Grant Requests Filed Week of October 1, 2012
| October 9, 2012
Last week Kyocera took advantage of the new post-grant provisions of the AIA by requesting inter partes review of two SoftView patents claiming systems for creating scalable displays of Internet content on mobile devices (see inter partes review Request Nos. (1) & (4). SoftView has sued Kyocera and Apple, among others, in Delaware for infringement of the patents. In May 2011, Apple initiated an inter partes reexamination of one of the two patents, U.S. Patent No. 7,831,926; though a non-final rejection is pending in that reexamination, the patentability of a majority of SoftView’s ‘926 claims has been confirmed. The PTO is likely to consider merging the new inter partes review with the earlier inter partes reexamination. An inter partes review request of a third SoftView patent in the litigation, U.S. Patent No. 7,028,257, might be in the offing.
Inter partes review was also requested by Micron of three semiconductor patents owned by the University of Illinois. The University and the company are involved in an infringement action in Illinois.
